DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-8, 10 and 17 in the reply filed on 04 February 2026 is acknowledged. Applicant’s election of Group I, claims 1-8, 10 and 17 in the reply filed on 04 February 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 9, 11-12 and 14-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-4, 7-8, 10 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Siegel (US 2009/0148586 A1) as evidenced by PubChem (2-Phenylethyl Acetate, https://pubchem.ncbi.nlm.nih.gov/compound/Phenethyl-acetate).
Regarding claims 1 and 10, Siegel discloses citrus juice sacs with aroma addition where the mixture comprises a fruit or vegetable juice (a composition comprising citrus juice) [0045]. Siegel discloses the aroma substance may be 2-phenylethyl acetate [0051]. As evidenced by PubChem, phenethyl acetate and 2-phenylethyl acetate are synonyms for the same molecule which has the formula recited in instant claim 1 (bottom of p1).
Siegel discloses the composition comprises a mixture of aroma substances at 50 ppm or more [0054], therefore the quantity of 2-phenethyl acetate in the mixture of aroma substances would be more than 50 ppm, which encompasses the claimed range of 1-500 ppb. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 I.
Alternatively, regarding the quantity of phenethyl acetate of claims 1 and 10, Siegel does not disclose the quantity of 2-phenethyl acetate. However, it is known in the art that the quantity of 2-phenethyl acetate, an aroma substance is disclosed by Siegel as suitable for increasing aroma content [00510], is a result effective variable, change the amount of 2-phenethyl acetate and you change the aroma of the composition. It has long been settled to be no more than routine experimentation for one of ordinary skill in the art to discover an optimum value of a result effective variable. Additionally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. MPEP 2144.05 II A. Since Applicant has not disclosed that the specific limitations recited in instant claims are for any particular purpose or solve any stated problem, absent unexpected results, it would have been obvious for one of ordinary skill to discover the optimum workable ranges of the product disclosed by the prior art by normal optimization procedures known in the art.
As to the claim language “container packed” (claim 1) and “container-packed processed food or beverage” (claim 10), this language is deemed to be an intended use in so far as the structure of the product is concerned. In article claims, a claimed intended use must result in structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. MPEP 2111.02. Given that the product of Siegel is identical to that of the presently claimed in terms of structure and composition, it meets the intended use of the claimed article.
Additionally Siegel discloses the citrus juice sacs with aroma addition can be used as part of ready meals and soups, bakery products and deep frozen food (processed food or beverage) [0046].
Regarding claims 2, 3, 4 and 17, the claim language
“wherein the composition is a container packed seasoning composition” (claim 2)
“wherein the composition is a composition used to improve a flavor of the citrus juice: (claim 3)
“wherein the composition is a composition used to suppress a decrease in a terpene” (claim 4)
“wherein the composition is a composition used to improve a flavor of the citrus juice” (claim 17)
this language is deemed to be an intended use in so far as the structure of the product is concerned. In article claims, a claimed intended use must result in structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. MPEP 2111.02. Given that the product of Siegel is identical to that of the presently claimed in terms of structure and composition, it meets the intended use of the claimed article.
Regarding claim 7, Siegel discloses a sorbet comprising the citrus juice sacs and an aroma addition (grapefruit essence oil), sugar and water (Example 7) [0093].
Siegel does not disclose the 2-phenylethyl acetate is the aroma addition of Example 7, however it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the 2-phenylethyl acetate as the aroma addition to the sorbet of Example 7 because Siegel discloses both grapefruit oil and 2-phenylethyl acetate can be used for increasing the aroma of citrus juice sacs [0050] [0051]. It is prima facie obvious to substitute equivalents known for the same purpose. MPEP 2144.06.
Regarding claim 8, Siegel as evidenced by PubChem disclose the composition of claim 1 as discussed above.
Siegel discloses a sorbet comprising the citrus juice sacs and an aroma addition (grapefruit essence oil), sugar, glucose syrup, whipping agent, citric acid and water (ingredients) (Example 7) [0093].
Siegel does not disclose the 2-phenylethyl acetate is the aroma addition of Example 7, however it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the 2-phenylethyl acetate as the aroma addition to the sorbet of Example 7 because Siegel discloses both grapefruit oil and 2-phenylethyl acetate can be used for increasing the aroma of citrus juice sacs [0050] [0051]. It is prima facie obvious to substitute equivalents known for the same purpose. MPEP 2144.06.
As to the claim language “a processed food or beverage”, this language is deemed to be an intended use in so far as the structure of the product is concerned. In article claims, a claimed intended use must result in structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. MPEP 2111.02. Given that the product of Siegel is identical to that of the presently claimed in terms of structure and composition, it meets the intended use of the claimed article.
Additionally, Siegel discloses the sorbet of Example 7 where the sorbet mass is folded and frozen (processed food or beverage) [0093].
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Siegel as evidenced by PubChem as applied to claim 1 above, and further evidenced by Suetsugu (Suetsugu et al. Supercritical CO2 extraction of essential oil from Kabosu (Citrus sphaerocarpa Tanaka) peel. Flavour 2, 18 (2013). https://doi.org/10.1186/2044-7248-2-18).
Regarding claims 5 and 6, Seigel discloses the citrus fruit can be lemon, lime, kabosu, sudachi or yuzu [0038]. As evidenced by Suetsugu, kabosu peel comprises limonene (Figure 2, p3) and limonene is a monoterpene which contributes to the aroma of citrus fruit (p2, LH col, para 1).
Response to Arguments
Applicant's arguments filed 04 February 2026 have been fully considered. To the extent they apply to the above rejections they are not persuasive.
Applicant argues the lowest concentration described by Siegel in view of Bedoukian is about 1000 ppb. Remarks p6.
This argument is not persuasive. Bedoukian is no longer relied upon in the rejection.
Applicant argues the data presented in Tables 1 and 2A-2C of the application demonstrate that including phenethyl acetate in concentration less than 500 ppb will maintain or improve the desired flavor and fragrance after heating the composition. Applicant argues unexpected results compared to the cited references. Remarks p6.
This argument is not persuasive. Claim 1 require only citrus juice and phenethyl acetate, without specifying the citrus juice. The data presented in tables 1 and 2A-2C pertains to a ponzu vinegar comprising soy sauce, yuzu, vinegar, sugar, glutamic acid and phenethyl acetate. The data presented in Tables 1 and 2A-2C is not commensurate in scope with the claims, therefore it cannot be used to show unexpected results.
Applicant argues the cited references do not teach or suggest that it would be possible to improve a citrus juice flavor with concentrations of phenethyl acetate from 1-500 ppb. Remarks p6.
This argument is not persuasive. In response to applicant's argument that the prior art does not address the improved citrus juice flavor at low concentrations of phenethyl acetate, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Additionally, Siegel discloses the aroma substances and mixtures thereof are suitable for increasing the aroma content of the citrus juice sacs [0050].
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Michele L Jacobson/Primary Examiner, Art Unit 1793
/C.L.G./Examiner, Art Unit 1793
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